[1]
LICENSE AGREEMENT FOR
AUTOMOBILE DVD VIDEO PLAYER AND/OR DVD ROM PLAYER MANUFACTURER
This License Agreement for Automobile DVD Video Player and/or DVD ROM Player
Manufacturer is dated [x of x 201x] (“License Agreement”) and is between [insert company]
(“Licensee”) and One-Red, LLC (“Licensing Company”).
E
The following terms used in this License Agreement have the meanings set out below:
Effective Date: _________________________________________________
Licensee’s Office Address:
PL
Licensee: ________________________________________
SA
M
Licensee’s Notice Address and Fax Number:
Address:
Fax Number:
Country of Domicile of Licensee: _________________________________________
DVD Automotive LA, Version 1 (060113)
[2]
RECITALS
WHEREAS, the DVD Format/Logo Licensing Corporation, based in Minato-ku, Tokyo, Japan, and
the DVD+RW Alliance have defined certain technical standards for an optical disc system, which
has been presented under the name DVD (referred to herein as the “DVD System”);
WHEREAS, Licensors each own certain patents relating to the DVD System;
WHEREAS, the Licensors are prepared to license their Licensed Patents on the terms set forth in
this License Agreement;
E
WHEREAS, each Licensor has granted Licensing Company the right to conclude this License
Agreement in accordance with the terms of this License Agreement;
PL
WHEREAS, each Licensor has authorized Licensing Company to grant licenses on behalf of such
Licensor in accordance with the terms of this License Agreement;
WHEREAS, Licensee acknowledges and understands that each of the Licensors whose Patents are
licensed under this License Agreement also makes their own Patents available through separate
licenses and that Licensee is encouraged by Licensing Company to evaluate and determine whether
separate licenses or this joint license best meets Licensee’s requirements and needs; and
SA
M
WHEREAS, the DVD ROM Standard Specifications (as hereinafter defined) and the DVD Video
Standard Specifications (as hereinafter defined), as well as the right to use the relevant DVD logo,
can be obtained from the entity known as the DVD Format/Logo Licensing Corporation, based in
Tokyo, Japan, or from the DVD+RW Alliance, as applicable;
NOW, THEREFORE, Licensee and Licensing Company agree as follows:
1
DEFINITIONS
“Affiliate” means, in relation to either party hereto, a legal entity which now, or at any time during
the term of this License Agreement, directly or indirectly, controls, is controlled by, or is under
common control with that party, but only for as long as such control exists. The term “control” as
used in this definition means ownership of more than fifty percent (50%) of the outstanding shares
representing the right to vote for directors or other managing officers of such legal entity; or, for a
legal entity which does not have outstanding shares, more than fifty percent (50%) of the ownership
interest representing the right to appoint directors or other managing officers of such legal entity.
The term Affiliate also includes any entity in which a party has, directly or indirectly, a majority of
the beneficial ownership of such entity.
DVD Automotive LA, Version 1 (060113)
[3]
“Authorized Manufacturer” means a third party or Licensee Affiliate that is authorized to
manufacture Licensed Product on behalf of Licensee or a Licensee Affiliate. Licensee may
designate one or more Authorized Manufacturers under this Agreement by providing written notice
to the Licensing Company by listing such Authorized Manufacturer in Appendix A.
“CD Specifications for Video and Super Video CD” means the specifications for Video CD Discs as
specified in the Video Specifications (White Book) and the specifications for Super Video CD Discs
as specified in the Super Video Specifications. For clarity, the CD Specifications for Video and
Super Video CD are not included in the definition of CD Standard Specifications herein.
PL
E
“CD Standard Specifications” means the specifications for CD Audio Discs as specified in The Red
Book or system description CD-Digital Audio (CD-DA), latest version May 1999, or any updated
version thereof, for CD ROM Discs, as specified in The Yellow Book, latest version May 1999, or
any updated version thereof, for CD Recordable Discs (CD-R) as specified in the Recordable
Compact Disc System Description Part II (Orange Book), and for CD Rewritable Discs (CD-RW) as
specified in the Rewritable Compact Disc System Description Part III (Orange Book), or any
updated version thereof.
SA
M
“Commercially Essential Patent(s)” means any Patent: (a) either (i) owned, at any time on or after
the Effective Date, by a Licensor or its Affiliates, or (ii) in respect of which a Licensor or its
Affiliates have or acquire, at any time on or after the Effective Date, the right to license without
payment of compensation to a third party other than its Affiliates, agents or employees, and (b) that
contains one or more claims that is/are necessary as a practical matter on the basis that there are no
economically viable substitutes to implement the relevant DVD Standard Specifications and, as
applicable, the relevant CD Standard Specifications.
“Compliant Rate” means the reduced royalty rate of US$ 2.80 (two US Dollars and eighty cents) for
each DVD Video Player and US$ 2.24 (two US Dollars and twenty-four cents) for each DVD ROM
Player.
“Country of Domicile of Licensee” has the meaning set forth on the cover page of this License
Agreement.
“Disc” means a non-recordable reflective disc-shaped information carrier, having either (a) a single
or dual information layer(s) which is/are readable from one side of the disc or (b) a single or dual
information layer(s) which is/are readable from one side of the disc and another single or dual
information layer(s) which is/are readable from the opposite side of the disc, comprising any kind of
information, including audio, video, text and/or data-related information, which is irreversibly stored
in one or more information layers during and as an integral part of the manufacturing process of the
disc in a form that is optically readable by playback devices using a laser-beam.
DVD Automotive LA, Version 1 (060113)
[4]
“DVD Data Recording Format Specifications” means any one or more of the following standard
specifications, including any supplements or revisions, which may be modified or updated from time
to time by the DVD Format/Logo Licensing Corporation, based in Minato-ku, Tokyo, Japan or by
the DVD+RW Alliance
for DVD+RW Discs :
(a)
DVD+RW 4.7 Gbytes Basic Format Specifications, version 1.0.
DVD+RW 8.5 Gbytes Basic Format Specifications part 2, volume 1 (Dual Layer),
version 1.0.
for DVD+R Discs:
PL
(c)
E
(b) DVD+RW 4.7 Gbytes Basic Format Specifications part 1, volume 2 (High Speed),
version 1.0.
(d) DVD+R 4.7 Gbytes Basic Format Specifications, version 1.0.
(e)
DVD+R 8.5 Gbytes Basic Format Specifications, part 2 (Dual Layer), version 1.0.
for DVD-R Discs :
DVD Specifications for Recordable Disc, version 1.0 (parts 1 and 2).
SA
M
(f)
(g) DVD Specifications for Recordable Disc, version 2.0 (parts 1 and 2).
(h) DVD Specifications for Recordable Disc, version 3.0 (parts 1 and 2).
for DVD-RW Discs :
(i)
DVD Specifications for Re-recordable Disc, version 1.0 (parts 1 and 2).
(j)
DVD Specifications for Re-recordable Disc, version 2.0 (parts 1 and 2).
for DVD-RAM Discs :
(k) DVD Specifications for Rewritable Disc, version 1.0 (parts 1 and 2).
(l)
DVD Specifications for Rewritable Disc, version 2.0 (parts 1 and 2).
For the avoidance of doubt, DVD Data Recording Format Specifications includes references within
any one of (a) – (l) above to another DVD specification (listed in (a) to (l) above), but excludes any
other standard that is merely referred to in one of subsections contained in the definition of DVD
Data Recording Format Specifications.
DVD Automotive LA, Version 1 (060113)
[5]
“DVD ROM Disc” means a replicated Disc comprising any kind of information, including audio,
video, text, and/or data-related information, encoded in digital form, that is optically readable by a
DVD ROM Player and that conforms to the DVD ROM Standard Specifications.
PL
E
“DVD ROM Player” means a Player capable of reproducing information stored on a DVD ROM
Disc and converting such information into electrical signals, in accordance with the DVD ROM
Standard Specifications. A DVD ROM Player may, in addition to reproducing information stored
on a DVD ROM Disc, be capable of reproducing information stored on a CD ROM Disc, or any
information stored on a CD-R Disc, CD-RW Disc, DVD-R Disc, DVD-RW Disc, DVD+R Disc,
DVD+RW Disc, or DVD-RAM Disc provided that such information is in accordance with the CD
Standard Specifications or DVD ROM Standard Specifications and such with the explicit exception
of information stored on such Discs that is in accordance with the CD Specifications for Video and
Super Video CD, the DVD Video Standard Specifications or the DVD Video Recording Format
Specifications. For clarity, DVD ROM Player shall not include any Player capable of playing any
Blu-Ray Disc.
“DVD ROM Standard Specifications” means the specifications for the DVD ROM System, as
specified in the document “DVD Specification for Read-Only Disc, version 1.0 (parts 1 and 2)” of
August 1996, or any updated version thereof, as issued by the DVD Format/Logo Licensing
Corporation.
SA
M
“DVD Video Disc” means a replicated Disc comprising any kind of information, including audio,
video, text, and/or data-related information, encoded in digital form, that is optically readable by a
DVD Video Player and by a DVD ROM Player and that conforms to the DVD ROM Standard
Specifications and the DVD Video Standard Specifications.
The DVD ROM Disc and the DVD Video Disc are collectively referred to as “DVD Disc(s)”.
“DVD Video Player” means a Player capable of reproducing information stored on a DVD Video
Disc and converting such information into electrical signals, in accordance with the DVD Standard
Specifications, which electrical signals are directly capable of and intended to be used for audiovisual reproduction through television receivers and/or video monitors and audio equipment. A
DVD Video Player may, in addition to reproducing information stored on a DVD Video Disc, be
capable of reproducing information stored on a CD Audio Disc, or any information stored on a CDR Disc, CD-RW Disc, DVD-R Disc, DVD-RW Disc, DVD+R Disc, DVD+RW Disc or DVD-RAM
Disc. For clarity, DVD Video Player shall not include any Player capable of playing any Blu-Ray
Disc.
The DVD ROM Player and the DVD Video Player are collectively referred to as “DVD Player(s)”.
DVD Automotive LA, Version 1 (060113)
[6]
“DVD Video Recording Format Specifications” means any one or more of the following standard
specifications, including any supplements or revisions, which may be modified or updated from time
to time by the DVD Format/Logo Licensing Corporation, based in Minato-ku, Tokyo, Japan or by
the DVD+RW Alliance:
(a) DVD+RW Video Format System Description, version 1.0.
(b) DVD+RW Video Format System Description, version 2.0.
(c) DVD+RW Video Format System Description, version 3.0.
E
(d) DVD+R Video Format System Description, version 1.0.
(e) DVD+R Video Format System Description, version 2.0.
PL
(f) DVD+R Video Format System Description, version 3.0.
(g) DVD Specifications for DVD-RAM/DVD-RW/DVD-R for General Discs, version 1.0
(part 3,4 and 5)
SA
M
For the avoidance of doubt, DVD Video Recording Format Specifications includes
references within any one of (a) – (g) above to another DVD specification (listed in (a) to (g)
above), but excludes any other standard that is merely referred to in one of subsections contained in
the definition of DVD Video Recording Format Specifications.
“DVD Video Standard Specifications” means the specifications for the DVD Video System, as
specified in the document “DVD Specification for Read-Only Disc, version 1.0 (part 3)” of August
1996, or any updated version thereof, as issued by the DVD Format/Logo Licensing Corporation.
The DVD Data Recording Format Specifications, the DVD Video Recording Format Specifications,
the DVD ROM Standard Specifications, and the DVD Video Standard Specifications are
collectively referred to as the “DVD Standard Specifications”.
“DVD Video System” means the Digital Versatile Disc Video System that is capable of storing and
reproducing video and audio signals in digital form from DVD Video Discs.
“Effective Date” has the meaning set forth on the cover page of this License Agreement.
“Essential Licensor Patent(s)” means a Commercially Essential Patent, a Technically Essential
Patent or both, regardless of whether the Patent is listed in the Essential Licensor Patent List.
“Essential Licensor Patent List” means the Essential Licensor Patent(s) listed on the Website. The
Essential Licensor Patent List shall identify the numbers of the claims that are determined to be
DVD Automotive LA, Version 1 (060113)
[7]
essential. The omission of a particular Patent or claim number from the Essential Licensor Patent
List is not a representation or warranty that the omitted Patent or claim is not essential.
“Former Essential Patent(s)” has the meaning set forth in Section 3.4.
“Licensed Patent(s)” means Essential Licensor Patents. “Licensed Patents” shall further include
Former Essential Patents, but solely to the extent the Former Essential Patents are made available
pursuant to Section 3.4, and solely to the extent the Licensee did not notify Licensing Company of
its wish that the Former Essential Patents not be included in the license as set forth in Section 3.4.
PL
E
“Licensed Product” means a DVD Player manufactured and/or sold in accordance with the
provisions hereof that is specifically designed to be incorporated in and as an integral part of an
automobile as original equipment at the time of such automobile’s initial assembly. For clarity,
“Licensed Product” excludes DVD Players Shipped in retail packaging and DVD Players designed
for incorporation in an automobile as an after-market item.
SA
M
“Licensee Affiliate” means one or more of the Affiliates of Licensee listed in Appendix A. If an
entity listed in Appendix A ceases to be an Affiliate of Licensee (by way of example, due to a
change in control), such entity shall lose its status as a Licensee Affiliate the same moment it ceases
to be an Affiliate of Licensee (regardless of whether the entity continues to be listed in Appendix
A).
“Licensor(s)” means each entity listed on the list entitled “Licensors” which can be accessed on the
Website and which may be amended from time to time by Licensing Company; provided, however,
that “Licensors” for the purposes of this License Agreement shall only include those entities that are
listed on the list entitled “Licensors” during the Term.
“Patent(s)” means any issued patent(s) in any country, including reexaminations, reissues,
continuations, divisionals and continuations-in-part.
“Patent Expert” means a patent expert independent from the parties hereto and from Licensors,
which is designated and retained from time to time by Licensing Company to determine whether a
Patent is an Essential Licensor Patent or to make other determinations as set forth in this License
Agreement.
“Player” means a single spindle playback device for optically reading information stored on a Disc
and converting such information into electrical signals for reproduction purposes.
“Quarter” means the calendar quarters ending on March 31st, June 30th, September 30th and
December 31st, or other non-overlapping quarterly periods to which Licensing Company consents in
writing.“Royalty Reporting Form” means a statement provided by Licensee to Licensing Company
DVD Automotive LA, Version 1 (060113)
[8]
by electronic means pursuant to Section 5.5, or in such other means as may be subsequently
communicated by Licensing Company to Licensee.
“Shipment,” “Ship” or variants thereof, in the context of a product, means (a) a transfer of title of
the product from Licensee or an Authorized Manufacturer to an entity that is neither Licensee nor an
Authorized Manufacturer or (b) a physical transfer of the product from a facility whose access is
controlled by Licensee or an Authorized Manufacturer to a facility that is controlled by an entity that
is neither the Licensee nor a Licensee Affiliate or an Authorized Manufacturer. If a product
undergoes multiple “Shipments”, the time of Shipment shall be deemed to be the first time that such
a transfer occurred to a party other than the Licensee or Authorized Manufacturer.
PL
E
“Standard Rate” means the standard royalty rate of US$ 3.60 (three US Dollars and sixty cents) for
each DVD Video Player and US$ 2.91 (two US Dollars and ninety-one cents) for each DVD ROM
Player.
“System Change” means a revision made in accordance with Section 10.
SA
M
“Technically Essential Patent(s)” means any Patent (a) either (i) owned, at any time on or after the
Effective Date by a Licensor and its Affiliates, or (ii) in respect of which a Licensor and its
Affiliates have, or acquire, at any time on or after the Effective Date, the right to license without
payment of compensation to a third party other than its Affiliates, agents or employees; and (b)
containing one or more claims that is/are necessarily infringed in an implementation of the relevant
DVD Standard Specifications and, as applicable, the relevant CD Standard Specifications.
“Term” means the period beginning on the Effective Date and ending when this License Agreement
expires or is terminated in accordance with the provisions hereof.
“Website” means www.one-red.com or any other website designated by Licensing Company from
time to time in connection with this License Agreement.
2
LICENSEE AFFILIATES AND AUTHORIZED MANUFACTURERS
2.1
Identification of Licensee Affiliates and Authorized Manufacturers.
(a)
Licensee shall complete and amend Appendix A to include the corporate name,
principal place of business and registered office of each of its Affiliates that is engaged in the
Shipment of any Licensed Product. Licensee shall remove from Appendix A, by
amendment, the name of any entity that ceases to be an Affiliate of Licensee. Licensee may
amend Appendix A by adding the names of its Affiliates that will engage in the Shipment of
Licensed Product and removing the names of its Affiliates that are not engaged in the
Shipment of any Licensed Product. Any amendment to Appendix A made pursuant to this
DVD Automotive LA, Version 1 (060113)
[9]
Section 2.1(a) shall be effective when Licensing Company receives a written copy of such
amended Appendix A, which shall include an indication of the information that has been
added, deleted or changed.
(b)
Licensee shall identify to Licensing Company the corporate name, principal place of
business and registered office of each and every Authorized Manufacturer also in Appendix
A . Licensee shall further identify to Licensing Company, via the Website, any third party or
Licensee Affiliate that ceases to be an Authorized Manufacturer. Such information shall be
provided via the Website in the manner prescribed by Licensing Company.
Rights and Obligations of Licensee Affiliates and Authorized Manufacturers. With the
exception of this Section 2, Section 11 (“Essential Patents”), Section 13 (“Term and
Termination”) and any other provision that expressly distinguishes between Licensee and a
Licensee Affiliate, the obligations and other requirements of this License Agreement that
apply to Licensee shall also apply to each and every Licensee Affiliate, and Licensee shall
ensure that Licensee Affiliates and Authorized Manufacturers satisfy all obligations and
other requirements imposed on Licensee Affiliates and Authorized Manufacturers.
2.3
Authority. Licensee warrants that it has either (a) all necessary right and authority to bind its
Affiliates to the obligations imposed on its Affiliates in this License Agreement or (b)
provided Licensing Company with a written undertaking from each of its Affiliates towards
Licensing Company in which such Affiliate states that it understands and agrees to comply
with the obligations of this License Agreement, including the joint liability for breach set
forth in Section 2.4 and, with respect to Affiliates, grant-back obligations set forth in Section
7.
SA
M
PL
E
2.2
2.4
Licensee Responsible for Affiliates’ and Authorized Manufacturers’ Acts. On behalf of
itself and the Licensee Affiliates, Licensee agrees that if any action or omission by a
Licensee Affiliate breaches this License Agreement, then Licensee and such Licensee
Affiliate shall be jointly and severally liable for such breach. Moreover, and solely to the
extent the relevant Authorized Manufacturer is providing products or services to or on behalf
of (including at the request of) Licensee or a Licensee Affiliate, Licensee shall be jointly and
severally liable for any action or omission by an Authorized Manufacturer that breaches this
License Agreement or infringes a Licensed Patent.
3
GRANT OF RIGHTS
3.1
License Grant. Subject to Licensee’s full and unconditional compliance with its obligations
under this License Agreement, Licensing Company hereby grants to Licensee during the
DVD Automotive LA, Version 1 (060113)
[10]
term of this License Agreement a non-exclusive, non-transferable license, under the
Licensed Patents, without the right to grant sublicenses, to make, have made by Authorized
Manufacturers, use, sell, offer for sale, import, export and Ship Licensed Products. The
license conferred pursuant to this Section 3.1 applies only to the extent the structure, features
and functions of a Licensed Product are used to practice those DVD Standard Specifications
and CD Standard Specifications applicable to that Licensed Product, and said license does
not extend to any structure, features or functions of a Licensed Product not used to practice
the DVD Standard Specifications and CD Standard Specifications.
the benefit of any entity other than the Licensee;
(b)
any product other than the Licensed Products; and
(c)
any intellectual property right other than rights in the Licensed Products.
E
(a)
Have Made Right. The rights granted to Licensee pursuant to Section 3.1 include the right
for Licensee to have Licensed Products manufactured by an Authorized Manufacturer solely
for the account of Licensee and the subsequent sale by Licensee. Such right to have
Licensed Product manufactured by an Authorized Manufacturer shall terminate in the event
that such Authorized Manufacturer engages in any action in connection with the Licensed
Product that would breach this License Agreement if performed by Licensee and the breach
is not cured by the Authorized Manufacturer or Licensee within a thirty (30) day period of
Licensee being notified of the breach. Licensee shall not exercise this “have made” right in a
manner such that it is a sham for the purpose of assisting third parties in avoiding payments
of royalties for products similar to Licensed Products for which such third parties should
have paid legitimately owed royalties to Licensing Company or effectively sublicensing the
Licensed Product to third parties. Except as provided by this paragraph, Licensee is not
permitted to authorize third parties to make Licensed Product.
SA
M
3.3
Limitation of License. No licenses are granted under this License Agreement for:
PL
3.2
3.4
Essential Patents that Cease to be Essential Patents. In the event that Licensing Company
becomes aware that a Patent that was originally listed on the Essential Licensor Patent List
was determined by a Patent Expert or a court of competent jurisdiction as no longer
qualifying as an Essential Licensor Patent (“Former Essential Patent(s)”), then Licensing
Company shall modify the Essential Licensor Patent List accordingly. Upon Licensing
Company modifying the Essential Licensor Patent List after such a determination, and
provided that Licensee had entered into this License Agreement before the moment of such
determination, such Patent will continue to be licensed pursuant to this License Agreement,
unless Licensee notifies Licensing Company in writing of its wish that such Patent not be so
included. Licensing Company and Licensee further acknowledge and agree that any change
DVD Automotive LA, Version 1 (060113)
[11]
to the Essential Licensor Patent List, as well as a determination that a Patent is a Former
Essential Patent, shall not give rise to any adjustment of the Standard Rate or the royalties
payable pursuant to this License Agreement and Licensee shall not be entitled to any refund
by virtue of such changes.
Obligation for Accuracy. Licensee shall use commercially reasonable efforts to ensure the
accuracy and completeness of all information required to be submitted in connection with
this License Agreement.
4
REGISTRATION FEE
4.1
Payment of Registration Fee. Licensee shall, within thirty (30) days of the execution of this
License Agreement, pay Licensing Company a non-refundable, non-recoupable registration
fee of US$ 10,000 (ten thousand US Dollars). This registration fee covers the initial fiveyear period of this License Agreement, and not any extension or renewal thereof.
5
ROYALTIES, REPORTS AND PAYMENTS
5.1
Standard Rate. If Licensee fails to meet its obligations set forth in Section 5.2, the royalty
rate payable in respect of each Licensed Product that is Shipped shall be the Standard Rate.
Subject to the provisions of Section 5.3, the royalty rate payable by Licensee in respect of
each Previously-Shipped Product shall be the Standard Rate.
5.2
Compliant Rate. Subject to the provisions of Section 5.3 and provided that Licensee is in
full compliance with its obligations under this License Agreement, then the royalty rate
payable in respect of each Licensed Product that is Shipped shall be the Compliant Rate. In
the event that Licensee fails to comply at any time with its obligations under this License
Agreement, then the Standard Rate shall apply in respect of each Licensed Product that is
Shipped instead of the Compliant Rate, with immediate effect from the first day of the
reporting period to which the occurrence of such non-compliance relates until such moment
that Licensing Company confirms in writing to Licensee that Licensee’s non-compliance has
been remedied in full.
5.3
Royalty Offsetting. If Licensee is also a party to a license agreement or covenant not to sue
or assert wherein one or more of a Licensor’s (“Bilateral Licensor”) Licensed Patents that
cover a Licensed Product are separately licensed under an agreement(s) other than this
License Agreement (“Bilateral Agreement”), Licensee may direct Licensing Company to
adjust the royalties payable under this License Agreement (as calculated on the basis of the
SA
M
PL
E
3.5
DVD Automotive LA, Version 1 (060113)
[12]
Compliant Rate, or the Standard Rate to the extent applicable under Sections 5.1 and 5.2),
by deducting therefrom the royalty portion that would otherwise be due to such Bilateral
Licensor pursuant to the Bilateral Agreement. If given, Licensee shall give such instruction
by submitting to Licensing Company a Confirmation of Bilateral Agreement form, a
template of which is provided as Appendix B to this License Agreement, duly completed and
signed by Licensee and the Bilateral Licensor concerned, to confirm that such Bilateral
Agreement has been executed and that the Bilateral Licensor agrees to such adjustment in
accordance with the provisions hereof.
Past Use. The provisions of this Section 5 (Royalties, Reports and Payments) shall apply to
Licensed Products Shipped by Licensee or Licensee Affiliates or Authorized Manufacturers
commencing on July 1, 2012 and prior to the Effective Date (“Previously-Shipped
Products”) to the same extent such provisions apply to a Licensed Product that is the subject
of the license granted hereunder. Within thirty (30) days after the Effective Date, Licensee
shall submit to Licensing Company a report that includes the same information for all
Previously-Shipped Products as is required for Licensed Products under Section 5.5;
provided, however, that Licensee may use commercially reasonable efforts to estimate such
information if Licensee cannot obtain more reliable information by using commercially
reasonable efforts.
5.5
Royalty Reporting, Invoicing and Payment Due Date.
SA
M
PL
E
5.4
(a)
Within thirty (30) days after the end of each Quarter during the term of this License
Agreement, Licensee shall submit to Licensing Company (even in the event that no
Shipments of Licensed Product have been made) a Royalty Reporting Form signed
by a duly authorized officer on behalf of Licensee, setting forth the following
information with respect to the preceding Quarterly period, and with respect to all
Licensed Product for which a royalty must be paid to Licensing Company (but such
report shall not include such information for any Licensed Products for which
Licensee has paid royalties pursuant to paragraph (c) below):
(i)
the total quantities of Licensed Products Shipped by and for Licensee and
Licensee Affiliates, and further specified by:
(A)
the brand name under which the Licensed Product will be sold to endusers (if available);
(B)
in the case of a Shipment due to a physical transfer, the country in
which the Shipment originates;
DVD Automotive LA, Version 1 (060113)
[13]
in the case of a Shipment due to a physical transfer, the country of
destination of the Shipment;
(D)
to the extent known to Licensee or a Licensee Affiliate, the country in
which the Licensed Product will ultimately be sold to end-users; and
(E)
in the case of a Shipment due to a transfer of title (without physical
transfer), the country of the location of the Licensed Product at the
time of Shipment; and
a computation of the royalties due under this License Agreement prior to the
royalty offsetting of Section 5.3.
E
(ii)
(C)
Within thirty (30) days after the receipt of the Royalty Reporting Form, Licensing
Company shall invoice Licensee for royalties that have accrued in the previous
Quarter or earlier. Except as otherwise provided in this License Agreement, Licensee
shall pay to Licensing Company the sum stated to be due in each such invoice no
later than forty-five (45) days from the date of the invoice.
(c)
Within thirty (30) days after receipt of the past use report referenced in Section 5.4,
Licensing Company shall invoice Licensee for royalties that would have accrued
commencing on the July 1, 2012 for Previously-Shipped Products as set forth in
Section 5.4. Licensee shall pay to Licensing Company the sum stated to be due in
such invoice no later than forty-five (45) days from the date of the invoice.
SA
M
PL
(b)
5.6
Payments in U.S. Dollars. All payments to be made by Licensee to Licensing Company
under this License Agreement shall be made in US Dollars.
5.7
Wire Information for Payments. All payments to be made by Licensee to Licensing
Company under this License Agreement shall be made without any deduction whatsoever
(except for the tax deduction specified in Section 5.8), whether for bank transmission
charges or otherwise, by wire transfer to:
Bank account no.:
204628739
Name:
One-Red, LLC
Bank:
Citibank
Swiftcode:
CITI US 33
ABA Routing No.:
321171184
DVD Automotive LA, Version 1 (060113)
[14]
or such other bank account as Licensing Company may designate in writing from time to
time.
Stamp Duties, Taxes and Other Levies. All stamp duties, taxes (including business taxes,
values added taxes, income taxes) and other similar levies arising from or in connection with
this License Agreement shall be borne by Licensee. If the government of any country
imposes any income tax to be withheld from payments made by Licensee under this License
Agreement, and requires Licensee to withhold such tax from such payments, Licensee may
deduct such tax from such payments. In such event, Licensee shall promptly provide
Licensing Company with all tax receipts issued by the relevant tax authorities that Licensing
Company may require to enable Licensing Company to document, if necessary, Licensee’s
compliance with tax obligations in any country and sufficient to enable each Licensor to
apply for an appropriate tax credit in the jurisdiction in which Licensor is based, if
applicable, including providing multiple tax receipts for each Licensor. If such tax receipts
are not provided promptly, Licensing Company reserves the right to treat the un-documented
deductions as unpaid royalties due, which will become subject to the provisions of this
License Agreement. Licensee shall inform Licensing Company if the withholding tax rates
on an invoice issued by Licensing Company are incorrect. Licensee shall inform Licensing
Company of any such error prior to paying the subject invoice.
5.9
Returns. Upon return of Licensed Products, Licensee may credit the royalties paid against
the current royalty report or apply such credit against future royalties due. For greater
certainty, such returns shall be subject to audit pursuant to Section 6. Once a Licensed
Product is returned it is no longer licensed and is no longer considered a Licensed Product.
In the event that the Licensed Product for which a credit has been taken is subsequently
resold, a new royalty will be due for such remanufactured or resold product.
5.10
Interest Due for Late Payments. Any payment that becomes due under this License
Agreement and that is not made in full when due, accrues interest at the rate of one percent
(1%) per month (or part thereof) or at the maximum rate permitted by law, whichever is
lower, until the moment when the principal amount outstanding and the interest having
accrued thereon are paid in full, irrespective of whether this occurs before or after expiry or
termination of this License Agreement.
SA
M
PL
E
5.8
DVD Automotive LA, Version 1 (060113)
[15]
6
RIGHT TO AUDIT
6.1
Permission for Certified Public Auditor to Audit. In order to verify:
the completeness and accuracy of Royalty Reporting Forms as submitted by Licensee
to Licensing Company;
(b)
the completeness and accuracy of the number of Licensed Products on which
royalties are or have been payable by Licensee;
(c)
Licensee’s compliance with other provisions of this License Agreement (provided,
however, that Licensing Company has a good faith belief that Licensee is in breach of
such other provisions); and
(d)
the completeness and accuracy of the number of, and royalties paid for, PreviouslyShipped Products reported to Licensing Company pursuant to Section 5.4.
PL
E
(a)
SA
M
Licensee shall permit an independent certified public auditor selected by Licensing Company
(“Certified Auditor”) to inspect all books and records of Licensee in accordance with this
Section 6 upon notice from Licensing Company requiring such inspection. Such audit shall
be performed under confidentiality obligations materially similar to those contained in this
Agreement. The Certified Auditor shall be (i) a certified public auditor, chartered accountant
or registered accountant (as these terms are generally known in the United States, the United
Kingdom and The Netherlands respectively) or holding an equivalent professional
qualification in the country in which the auditor practices, (ii) a member of a well-respected
firm, preferably one of KPMG, PricewaterhouseCoopers, Deloitte Touche Tohmatsu and
Ernst & Young (or any of their successors), or (iii) a member of the American Institute of
Certified Public Accountants (AICPA), the Institute of Chartered Accountants in England &
Wales (ICAEW), or Koninklijk Nederlands Instituut van Register accountants (NIVRA)
(whichever of these associations governs accounting in the country in which the auditor
practices), or a member of a professional body of similar standing where this is not
practicable.
6.2
Requirements In the Event of and In Preparation for Audits. Licensee shall maintain
complete and accurate books and records relating to Licensee’s obligations under this
License Agreement and shall keep such books and records available for inspection by a
Certified Auditor for a period of three (3) years following each Shipment to which the books
or records relate. Licensee shall ensure that a full copy of such books and records remains
available for inspection by the Certified Auditor at all times during normal business hours.
Any inspection under this Section 6 shall be initiated by Licensing Company no more than
once per calendar year and shall be conducted by the Certified Auditor. Licensing Company
DVD Automotive LA, Version 1 (060113)
[16]
Costs of Audit. The inspection referred to in this Section 6 shall be conducted at Licensing
Company’s own expense, except that such expense shall be borne by Licensee where the
inspection reveals that:
(a)
Licensee has failed to comply with its obligations under Section 6.2; or
(b)
the Certified Auditor certifies that there is a discrepancy or error by way of
underpayment of five percent (5%) or more of the monies actually due during the
period under inspection.
SA
M
6.3
PL
E
shall give Licensee notice of such inspection at least seven (7) business days prior to the
inspection. Licensee shall promptly and fully co-operate and provide access to its books and
records and provide all assistance that Certified Auditor may reasonably require in
connection with such inspection. Licensee shall allow the Certified Auditor (if such
Certified Auditor determines it to be reasonably necessary) to make copies of all documents,
and to take such copies from Licensee’s premises (or any other premises at which the
documents are held by Licensee) to enable the Certified Auditor to prepare and support its
audit report. The Certified Auditor shall not provide Licensing Company with any
information obtained from Licensee in connection with such audit unless the Licensee was
obligated to provide such information to Licensing Company pursuant to this License
Agreement (excluding this Section 6) or the provision of such information to Licensing
Company is reasonably necessary in order for the Certified Auditor to inform Licensing
Company of an actual or potential breach.
6.4
6.5
Effect of Underpayment. If the inspection determines that an underpayment of the monies
actually due occurred during the period under inspection, Licensee shall pay:
(a)
the amount of the underpayment;
(b)
if the underpayment meets or exceeds the threshold set forth in Section 6.3(b), the
difference between all royalties due for the period under inspection calculated using
the Standard Rate and such royalties calculated using the Compliant Rate; and
(c)
interest on the foregoing amounts calculated in accordance with the provisions of
Section 5.10.
Payment of Audit Does Not Prejudice Other Rights. Payment of the cost of inspection and
of additional royalties pursuant to this Section 6 shall be without prejudice to any other claim
or remedy that Licensing Company may have under this License Agreement, including
Licensing Company’s right to terminate this License Agreement, or under any applicable
law.
DVD Automotive LA, Version 1 (060113)
[17]
RAND GRANT-BACK
7.1
Obligation to Grant-Back Under RAND Terms. Licensee and its Affiliates shall not
unreasonably refuse to grant to qualified entities (defined below), for products that are
configured in compliance with the DVD Standard Specifications (“DVD Products”), nonexclusive, non-transferable rights (by way of license or otherwise), on fair, reasonable, nondiscriminatory conditions, to manufacture, transfer, sell, import or otherwise dispose of DVD
Products under any and all Grant-Back Essential Patents. “Grant-Back Essential Patents”
means present and future Patents that contain one or more claims which are (or which were,
if Former Essential Patents) necessarily infringed, or necessary as a practical matter on the
basis that there are no economically viable substitutes, to implement the DVD Standard
Specifications and, as applicable, the CD Standard Specifications for which Licensee or its
Affiliates have during the Term, or may acquire during the Term, the right to grant licenses.
For the purposes of this Section 7.1 only, each Licensor’s per-Patent share of the royalties
paid per Licensed Product in accordance with this License Agreement shall be deemed to be
a fair, reasonable and non-discriminatory royalty rate for the grant (by way of license or
otherwise) by Licensee and its Affiliates under its Grant-Back Essential Patents. For the
purposes of this paragraph, “qualified entities” means (a) third parties and their respective
Affiliates that have entered or will enter into a registration or license agreement with
Licensing Company under one or more of the Licensed Patents (by way of example, a
“Automobile License Agreement for DVD Video Player and/or DVD ROM Player
Manufacturer”) and (b) Licensors. Notwithstanding any provision of this paragraph to the
contrary, Licensee (or its Affiliates) shall not be required to grant a third party a license
under a Grant-Back Essential Patent if such a license would require Licensee (or its
Affiliates) to pay compensation to a third party other than the Affiliates, agents or employees
of Licensee (or its Affiliates).
SA
M
PL
E
7
7.2
Consideration for RAND Grant-Back. The undertaking given by Licensee and its Affiliates
in Section 7.1 is given in consideration of the benefits set forth in this License Agreement,
including the benefit of substantively equivalent undertakings given by other entities under a
“Automobile License Agreement for DVD Video Player and/or DVD ROM Player
Manufacturer” or under other registration or license agreements with Licensing Company
under one or more of the Licensed Patents that include undertakings substantively equivalent
to the undertaking in Section 7.1, and without prejudice to the provisions of Section 13
(Term and Termination) of this License Agreement.
7.3
Term of the Grant-Back License. Any license made available under Section 7.1 shall be
available for a period ending on the expiry date of the last subsisting Grant-Back Essential
DVD Automotive LA, Version 1 (060113)
[18]
Patent. For the avoidance of doubt, where a Patent for which a license has been granted
pursuant to Section 7.1 has expired, it shall be removed from such license, which shall
continue to run only in relation to still subsisting Patent(s).
Transfer of Grant-Back Essential Patents. If Licensee (or its Affiliates) assigns, exclusively
licenses, sells or transfers a Grant-Back Essential Patent to another entity, Licensee (or such
Affiliates) shall, in the instrument giving effect to such assignment, exclusive license, sale or
transfer, include provisions which ensure that the assignee, exclusive licensee, purchaser or
transferee of such Grant-Back Essential Patents is bound by equivalent obligations with
respect to such Grant-Back Essential Patents as is Licensee (or such Affiliates) pursuant to
this Section 7. Licensee acknowledges that the obligation to license Grant-Back Essential
Patents on fair, reasonable, non-discriminatory conditions in accordance with Section 7.1
runs with such Patents and thus binds any subsequent owner of such Patents.
7.5
Grant-Back and Affiliates. If an entity that was an Affiliate of a Licensee becomes no longer
Affiliated with the Licensee, the entity’s obligations under Section 7 shall continue with
respect to any Patent that the entity had or acquired between the Effective Date and the
moment the entity became no longer Affiliated with the Licensee.
8
NO WARRANTY, INDEMNITY
8.1
No Representation or Warranty as to Specifications. Licensing Company makes no
representation or warranty as to the completeness or accuracy of the DVD Standard
Specifications and the CD Standard Specifications, nor as to the ability of Licensee to
achieve interoperability of any Licensed Product through the use of such information.
8.2
Indemnification as to Licensed Products. Licensee acknowledges and agrees that third
parties may own intellectual property rights relating to Licensed Products. Licensing
Company makes no representation or warranty that the manufacture, importation, use,
offering for sale, sale or other disposal of Licensed Product does not infringe or will not
infringe any intellectual property right of any third party. Licensee shall indemnify and hold
harmless Licensing Company from and against any and all third party claims made in
connection with Licensed Product manufactured, acquired, used, sold, offered for sale or
otherwise disposed of by Licensee.
8.3
Waiver. Licensee hereby waives all rights and hereby forever releases from liability, or in
respect of matters that cannot be released from liability, shall indemnify and hold harmless,
Licensing Company and Licensors from and against any and all liabilities as may arise in
SA
M
PL
E
7.4
DVD Automotive LA, Version 1 (060113)
[19]
relation to claims made by Licensee, or customers of Licensee, relating to Licensed Product
being delayed or detained at customs, seized or destroyed.
Limitation of Liability. In no event shall Licensing Company be liable to Licensee under
any cause of action (other than intentional breach or liabilities arising under Section 6.3)
arising under or related to this License Agreement for any amount greater than US$20,000
(twenty thousand US Dollars).
8.5
No Representation Regarding Validity or Enforceability of Licensed Patents.
Notwithstanding anything to the contrary in this License Agreement, Licensing Company
makes no representation or warranty about the validity or enforceability of any of the
Licensed Patents and specifically excludes and disclaims any liability for any damage that
Licensee may suffer under any cause of action due to the invalidity or unenforceability of
any of the Licensed Patents.
8.6
Representations and Warranties. Licensing Company and Licensee each represent and
warrant that: (a) it is a duly organized and validly existing legal entity; (b) it has all requisite
power and authority to execute this License Agreement and to perform its obligations
hereunder; (c) this License Agreement has been duly executed by an officer or representative
of such party authorized to act on its behalf; and (d) its obligations under this License
Agreement do not conflict with its bylaws, certificate of incorporation or equivalent charter
documents.
SA
M
PL
E
8.4
8.7
No Special Damages. TO THE GREATEST EXTENT PERMITTED BY LAW,
LICENSING COMPANY SHALL NOT BE LIABLE FOR ANY INDIRECT,
CONSEQUENTIAL, PUNITIVE OR SPECIAL DAMAGES, INCLUDING DAMAGES
FOR LOST PROFITS OR BUSINESS INTERRUPTION, RELATING TO THE
LICENSED PRODUCTS OR ARISING OUT OF THIS LICENSE AGREEMENT, EVEN
IF LICENSING COMPANY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES. EXCLUDING THE EXPRESS WARRANTIES SET FORTH HEREIN,
LICENSING COMPANY MAKES NO EXPRESS OR IMPLIED WARRANTIES.
9
CONFIDENTIALITY
9.1
Licensing Company shall, during the Term and for a period of five (5) years thereafter, not
disclose to any third party or use any confidential information obtained in connection with
this License Agreement for any purpose other than:
(a)
if required by any judicial or governmental request, requirement or order, or by
operation of law, provided however, that Licensing Company shall provide Licensee
DVD Automotive LA, Version 1 (060113)
[20]
with notice of such request, requirement or order and, if available, assist Licensee (at
Licensee’s expense) with obtaining a protective order against such disclosure;
to disclose the information under an obligation of confidence to an auditor for any
purpose contemplated by this License Agreement;
(c)
to disclose the information under an obligation of confidence to a subcontractor of the
Licensing Company; or
(d)
to enforce Licensing Company’s rights under this License Agreement in the event of
a breach by Licensee. The disclosure of confidential information pursuant to this
subsection “(d)” may include disclosure under an obligation of confidence to
Licensors in order for Licensing Company to: (i) inform Licensors of Licensee’s
breach of this License Agreement or Licensing Company’s plan to terminate this
License Agreement due to such a breach; or (ii) seek Licensors’ approval to enforce
this License Agreement using legal or governmental institution(s). Notwithstanding
the foregoing, in no event shall Licensing Company disclose Licensee’s
competitively sensitive information to Licensors.
Circumstances When Not Obligated to Keep Information Confidential. The obligations of
Licensing Company in Section 9.1 shall not apply to the extent that the Licensing Company
can prove, by written evidence, that such information:
SA
M
9.2
PL
E
(b)
9.3
(a)
has, after the date of this License Agreement, been published or otherwise generally
made available to the public, except in consequence of a willful or negligent act or
omission by Licensing Company in breach of its confidentiality obligations under this
Section 9;
(b)
has been made available to Licensing Company by a third party who is entitled to
divulge such information and who is not under any obligation of confidentiality in
respect of such information to Licensee or which has been disclosed under an express
statement from Licensee or a Licensee Affiliate that it is not confidential;
(c)
has been independently developed by Licensing Company other than in the course of
the exercise of Licensing Company’s rights under this License Agreement or the
implementation of this License Agreement; or
(d)
is information already known to Licensing Company before its receipt from the
disclosing party and such information was not protected by confidentiality protections.
This License Agreement Is Not Confidential. For the avoidance of doubt, the contents of
this License Agreement are not subject to any confidentiality obligation.
DVD Automotive LA, Version 1 (060113)
[21]
SYSTEM CHANGES
10.1
Licensing Company May Make Changes to Licensing System. Licensee acknowledges and
agrees that the integrity of Licensing Company’s licensing system is important to the
equitable treatment of manufacturers of Licensed Product and to open and fair competition in
the market for Licensed Product and the market for licensing intellectual property rights
relevant to Licensed Product. Accordingly, Licensee acknowledges and agrees that
Licensing Company may, in its sole discretion which Licensing Company shall not exercise
unreasonably or within an unreasonably short period of time, revise any or all of the
following:
(a) the Standard Rate; and
PL
(b) the Compliant Rate.
E
10
Licensee acknowledges and agrees that any such revision or other change as set out in a
notice shall be deemed to be incorporated into this License Agreement upon the effective
date of the change.
Licensee May Terminate This License Agreement in the Event of System Change. Licensee
shall be entitled to refuse to comply with any System Change, including pre-authorized
increases in the Standard Rate or Compliant Rate, by providing Licensing Company with
timely notice of such refusal. In the event Licensee provides such notice, this License
Agreement will automatically terminate if the refusal relates to a pre-authorized increase in
the Standard Rate or Compliant Rate or any System Change in Section 10.1. An increase in
the Standard Rate or Compliant Rate shall be considered “pre-authorized” if it occurs in
conjunction with (a) a substantial increase in the number of patents listed on the Essential
Licensor Patent List because of (1) the addition of one or more entities to the list of
Licensors or (2) the acquisition of patents by an existing Licensor, or (b) a modification or
update by the DVD Format/Logo Licensing Corporation or the DVD+RW Alliance to the
standard specifications listed in the definition of “DVD Standard Specifications,” which
results in a material addition of technology covered by the definition. Such notice of refusal
shall be considered “timely” if it is provided (i) one or more days before the System Change
takes effect, in which case this License Agreement shall automatically terminate the day
before such System Change takes effect, or (ii) thirty (30) or less days after the System
Change takes effect, in which case this License Agreement shall automatically terminate
immediately upon the provision of such notice and Licensee shall not be considered to have
breached this Agreement merely because it failed to comply with the System Change.
SA
M
10.2
DVD Automotive LA, Version 1 (060113)
[22]
10.3
Licensing Company Agrees Not to Make Certain Changes. Licensing Company undertakes
that it will not:
(a)
act unreasonably in making any System Change; or
(b)
restrict the scope of any license that has been granted under this License Agreement.
ESSENTIAL PATENTS
11.1
Objection to Essentiality. Should Licensee object to the inclusion or exclusion of any Patent
owned by Licensors as a Technically Essential Patent or a Commercially Essential Patent in
or from the Essential Licensor Patent List based on a contention identified in this paragraph
below, such Patent shall be submitted to a Patent Expert to evaluate the subject Patent and
resolve the contention, and the fees and expenses of the Patent Expert for such evaluation
shall be borne by the Licensee pursuant to Appendix C of this License Agreement. In the
event that the Patent Expert determines that such Patent is or is not a Technically Essential
Patent or a Commercially Essential Patent, such Patent shall be added to or deleted from the
Essential Licensor Patent List as appropriate until such time, if ever, that the Patent Expert’s
decision is overturned by a court of competent jurisdiction.
11.2
Essential Licensor Patent List May Be Subject to Revisions and Royalty Rates Will Not
Change Due to Such Revisions. Licensing Company and Licensee acknowledge and agree
that the Essential Licensor Patent List may be subject to continual revision. Licensing
Company and Licensee further acknowledge and agree that any change to the Essential
Licensor Patent List, as well as a determination that a Patent is a Former Essential Patent,
shall not give rise to any adjustment of the Standard Rate, Compliant Rate or the royalties
payable pursuant to this License Agreement and Licensee shall not be entitled to any refund
by virtue of such changes.
11.3
Revocation of Patents From License. “Licensee-Related Entity” means (a) Licensee; (b) an
Affiliate of Licensee; (c) an Authorized Manufacturer; or (d) a minority shareholder having
thirty percent (30%) ownership or more in Licensee or its Affiliates which manufactures or
sells any DVD Product(s) or an Affiliate of such minority shareholder which manufactures
or sells any DVD Product(s). A “Licensee Essential Patent” is a Patent that contains one or
more claims which are (or which were, if Former Essential Patent) necessary (where
“necessary” for the purposes of this paragraph only means that the claim is either necessarily
infringed, or necessary as a practical matter on the basis that there are no economically
viable substitutes, to implement the relevant DVD Standard Specifications and, as applicable,
the relevant CD Standard Specifications). Licensee acknowledges that in the event a
SA
M
PL
E
11
DVD Automotive LA, Version 1 (060113)
[23]
NO ASSIGNMENT
SA
M
12
PL
E
Licensee-Related Entity has brought a claim for infringement of a Licensee Essential Patent
in a lawsuit or other proceeding against one or more of the Licensors, or that a LicenseeRelated Entity has refused to grant a Licensor a license under a Licensee Essential Patent on
reasonable and non-discriminatory conditions, such Licensor’s Licensed Patents may be
removed from any license granted by Licensing Company to such Licensee or Licensee
Affiliates. If the Licensee-Related Entity is an Authorized Manufacturer that is not an
Affiliate, such Licensed Patent shall only be deemed removed for Licensed Products
manufactured for Licensee or its Licensee Affiliates by such Authorized Manufacturer. In
the event that a Licensee-Related Entity bringing such a claim does not agree that its Patent
contains one or more necessary claims, such Patent shall be promptly submitted to a Patent
Expert and Licensing Company’s right to revoke the Licensor’s Patents shall be suspended
until the Patent Expert determines that such Patent contains a necessary claim. The fees of
the Patent Expert for such evaluation shall be borne by the Licensee unless the Patent Expert
determines that such Patent does not contain one or more necessary claims, in which case the
fees shall be borne by the relevant Licensor(s) contending that such Patent does contain one
or more necessary claims.
12.1
Licensee’s Assignment. This License Agreement shall inure to the benefit of and be binding
upon each of the parties hereto and their respective successors and permitted assignees. It
may not be assigned by Licensee in whole or in part except with the prior consent of
Licensing Company, which consent shall not be unreasonably withheld when assigned in
whole to an Affiliate of Licensee, given in writing and executed by a duly authorized
representative of Licensing Company.
12.2
Licensing Company’s Assignment. Licensing Company may assign this License Agreement
in whole to a successor of Licensing Company after providing Licensee with at least
fourteen (14) days notice.
13
TERM AND TERMINATION
13.1
Term. This License Agreement shall commence on the Effective Date. Unless and until
terminated earlier in accordance with the provisions of this License Agreement, this License
Agreement shall remain in force for a period of five (5) years from the Effective Date or
until the expiry date of the last Licensed Patent, whichever comes first. This License
Agreement shall automatically extend for successive five (5) year periods, unless (a)
DVD Automotive LA, Version 1 (060113)
[24]
Licensee notifies Licensing Company of its wish not to extend the Term no later than fortyfive (45) days prior to the then-applicable end of the then-current five (5) year period, in
which case this License Agreement shall terminate at the end of the then-current five-year
period or (b) this License Agreement is terminated prior to the expiration of the then-current
five-year period.
Licensee May Terminate Without Cause. Notwithstanding Section 13.1, Licensee may
terminate this License Agreement without cause upon giving Licensing Company forty-five
(45) days notice of its intention to terminate.
13.3
Either Party May Terminate If Other Party Breaches. Without prejudice to the provisions of
Section 13.4 through Section 13.9, either party may terminate this License Agreement if the
other party (or any Licensee Affiliate) fails to perform any obligation under this License
Agreement and such failure is not remedied within thirty (30) days after receipt of a notice
specifying the nature of such failure and requiring it to be remedied. Such right of
termination shall be without prejudice to any other remedy to which the non defaulting party
may be lawfully entitled and all such remedies shall be cumulative.
13.4
Licensing Company May Terminate.
Agreement if:
PL
E
13.2
Licensing Company may terminate this License
subject to applicable laws, a creditor or other claimant takes possession of, or a
receiver, administrator or similar officer is appointed over, any of the assets of
Licensee or a Licensee Affiliate, or Licensee or a Licensee Affiliate makes any
voluntary arrangement with its creditors or becomes subject to any court or
administration order pursuant to any bankruptcy or insolvency law; or
(b)
any of Licensee’s or a Licensee Affiliate’s representations in or under this License
Agreement proves to be false or is breached in any manner; or
(c)
a notice has been issued by Licensing Company specifying non-payment or late
payment of royalties, and Licensee does not remedy such non-payment or late
payment within thirty (30) days of such notice being issued; or
(d)
any event of force majeure as set forth in Section 14.6 prevents Licensee from
fulfilling any obligation under this License Agreement for at least ninety (90)
consecutive days.
SA
M
(a)
13.5
Notice of Termination. In each instance where Licensing Company has a right to terminate
pursuant to Section 13.4, Licensing Company may only exercise such termination right by
giving notice to Licensee specifying the reason for such termination. Any termination so
effected shall be effective immediately upon such notice.
DVD Automotive LA, Version 1 (060113)
[25]
Payments Due Notwithstanding Termination. Upon termination of this License Agreement
by Licensing Company for any reason pursuant to Sections 13.3 or 13.4, any and all amounts
outstanding under this License Agreement shall become immediately due and payable.
Rights already accrued shall survive termination. In the event the credit set forth in Section
5.9 exceeds the amount owed to Licensing Company as of termination, Licensing Company
shall pay, no later than three (3) months after termination, Licensee a refund equal to the
credit less the amount owed.
13.7
Survival. All acknowledgements by Licensee and Licensee Affiliate under this License
Agreement, and the following provisions of this License Agreement, shall survive the expiry
or termination of this License Agreement: Sections 1, 2, 5, 7, 8, 9, 13.6, 13.7, 13.8, 13.9 and
14. Section 6 of this License Agreement shall survive the expiry or termination of this
License Agreement for one (1) year.
13.8
Reporting of Stock Following Termination. Within thirty (30) days following the
termination of this License Agreement, Licensee shall submit to Licensing Company a report
(i) specifying the number of Licensed Products owned or controlled by or for Licensee or
Licensee Affiliates that remain in stock at such date of termination and (ii) identifying the
nature and location of all warehouses or other storage facilities where such Licensed
Products are stored. The rights and obligations of this License Agreement shall continue to
apply to such Licensed Products after termination of this License Agreement until (a) no
such products remain in stock, (b) the date occurring thirty (30) days after the termination of
this License Agreement if this License Agreement has been terminated by Licensing
Company in accordance with Section 13.3, or (c) the date occurring ninety (90) days from
the termination of this License Agreement if this License Agreement has not been terminated
by Licensing Company in accordance with Section 13.3, whichever occurs earliest. The
obligations of Licensee in this Section 13.8 shall not apply to Licensed Products: (x) that
have been included in a Shipment by Licensee or a Licensee Affiliate but that remain under
Licensee’s or a Licensee Affiliate’s control and for which royalties have become due and
have been paid in accordance with the provisions of this License Agreement or (y) Licensed
Products that were manufactured in and remain in a country where no Licensed Patents
subsist.
SA
M
PL
E
13.6
13.9
Termination Upon All Patents Expiring or Non-Infringement. Upon (i) the expiration of the
last to expire Essential Licensor Patent; or (ii) the final adjudication by a court of competent
jurisdiction of invalidity or unenforceability of the last of the unexpired Licensed Patents,
from which adjudication no appeal is taken or allowed; or (iii) the issuance of a written
opinion by a Patent Expert concluding that the last subsisting Licensor’s Patent made
available by this License Agreement does not qualify as an Essential Licensor Patent, this
License Agreement shall automatically terminate.
DVD Automotive LA, Version 1 (060113)
[26]
MISCELLANEOUS
14.1
No Breach for Non-Infringement. Notwithstanding anything to the contrary contained in this
License Agreement, it shall not be a breach of this License Agreement, nor shall it give rise
to any royalty payment or other obligations under this License Agreement, for Licensee to
manufacture, sell, import or otherwise dispose of a Licensed Product, where such
manufacture, sale, importation or other disposal does not infringe any claim of an issued and
unexpired Licensed Patent that has not been held unenforceable, un-patentable or invalid by
a decision of a court or governmental agency of competent jurisdiction, where no appeal
against such decision is possible.
14.2
Right, Title and Interest in Patents Remain with Licensors. Licensee acknowledges that all
right, title and interest in and to Licensed Patents are owned by Licensors. Licensee shall not
acquire any rights or title in any of the Licensed Patents, whether by implication, use,
registration or otherwise.
14.3
Third Party Infringement of Licensed Patents. Licensee acknowledges and agrees that this
License Agreement does not grant or imply any right to instigate any action against a third
party for infringement of any Licensed Patent.
SA
M
PL
E
14
14.4
Modifications to the License Agreement for Automobile DVD Video Player and/or DVD
ROM Player Manufacturer. Licensee acknowledges and agrees that Licensing Company
may modify the wording of the standard version of the “License Agreement for Automobile
DVD Video Player and/or DVD ROM Player Manufacturer” at any time. Licensee shall at
all times have the option of entering into the most recent version of the “License Agreement
for Automobile DVD Video Player and/or DVD ROM Player Manufacturer”, as published
by Licensing Company on the Website or otherwise communicated by Licensing Company
to Licensee after the Effective Date. Except as provided in Section 10, nothing in this
License Agreement shall be construed as giving Licensing Company the right to change the
wording of this License Agreement, without Licensee’s consent, after it has been executed
by Licensee.
14.5
Notices. Any notice required to be given by either party under this License Agreement shall,
unless explicitly specified in this License Agreement otherwise, be given in writing in the
English language by means of registered mail, a facsimile or e-mail directed:
in respect of Licensee or Licensee Affiliate, to:
[Licensee’s Address, Fax Number and e-mail address for notice purposes]:
DVD Automotive LA, Version 1 (060113)
[27]
in respect of Licensing Company, to:
E
One-Red, LLC
920 Stewart Drive
Sunnyvale, CA 94085
United States of America
Tel: (408) 752-8550
Fax: (408) 752-8573
E-mail: [email protected]
Attn: Legal Department
SA
M
PL
or such other address as may be thereafter specified by the party for the purpose of receiving
notice. Notice shall be deemed to have been given on the day that it is so delivered
personally or sent by facsimile transmission or e-mail and the appropriate answer back or
confirmation of successful transmission or e-mail is received or, if sent by courier, shall be
deemed to have been given two (2) business days after delivery by the courier company, or if
mailed, ten (10) business days following the date on which such notice was so mailed. The
proper sending of notice to Licensee shall constitute the proper sending of notice to any and
all Licensee Affiliates.
14.6
Force Majeure. Neither party shall be responsible for any failure to fulfill its obligations due
to causes beyond its reasonable control, including acts or omissions of government or
military authority, acts of God, materials shortages, transportation delays, fires, floods, labor
disturbances, riots, wars, terrorist acts or inability to obtain any export or import license or
other approval or authorization of any governmental authority.
14.7
Entire Agreement. This License Agreement sets forth the entire understanding and
agreement between the parties as to the subject matter to which it refers, and supersedes and
replaces all prior arrangements, discussions and understandings between the parties relating
to such subject matter. Subject to Sections 2.1, 10 and 11, no variation to this License
Agreement shall be binding upon either party unless made in writing and signed by an
authorized representative of each of the parties.
14.8
Rights and Obligations Not Conferred by this License Agreement. Nothing contained in this
License Agreement shall be construed:
(a)
as imposing on either party any obligation to instigate any action for infringement of
any Licensed Patent, or to defend any action brought by a third party which
challenges or relates to the validity of any Licensed Patent;
DVD Automotive LA, Version 1 (060113)
[28]
as imposing any obligation to file any patent, trademark or copyright application, to
secure any patent, trademark or copyright registration, or to maintain any subsisting
patent, trademark or copyright registration; or
(c)
as transferring any title to any product or device.
Independent Counsel. Licensee, on behalf of itself and the Licensee Affiliates, acknowledges
and confirms that it has had sufficient opportunity to engage a legal counsel of its choice to
review the structure, contents and implications of this License Agreement, and Licensee, on
behalf of itself and the Licensee Affiliates, acknowledges and confirms that it freely enters
into this License Agreement.
E
14.9
(b)
PL
14.10 No Waiver. Neither the failure nor the delay of either party to enforce any provision of this
License Agreement shall constitute a waiver of such provision or of the right of either party
to enforce each provision of this License Agreement.
SA
M
14.11 Severability. Should any provision of this License Agreement be finally determined to be
void or unenforceable in any judicial proceeding, such determination shall not affect the
operation of the remaining provisions of this License Agreement, provided that, in such
event, either party shall have the right to terminate this License Agreement by notice to the
other party.
14.12 Interpretation. The Section headings contained in this License Agreement are for reference
purposes only and do not in any way control the meaning or interpretation of this License
Agreement. Explicit references to a particular section shall be deemed to include a reference
to its subsections, if any. The terms “for the avoidance of doubt,” “including,” “such as,”
“by way of example” or any variation thereof means “including the following by way of
example only, without limitation” and shall not be construed to limit any general statement
that it follows to the specific or similar items immediately following it. This License
Agreement shall be fairly interpreted in accordance with its terms and without any
presumption in favor of or against either party regardless of the drafter.
14.13 Governing Law. If the Country of Domicile of Licensee is the People’s Republic of China,
this License Agreement is governed by the laws of the Hong Kong Special Administrative
Region. If the Country of Domicile of Licensee is not the People’s Republic of China, this
License Agreement is governed by the laws of the State of New York, United States of
America.
14.14 Dispute Resolution. Other than as provided in Section 14.15, any dispute between the
parties in connection with this License Agreement (including any question regarding its
existence, validity or termination) shall be submitted to (a) any competent court of the Hong
DVD Automotive LA, Version 1 (060113)
[29]
PL
E
Kong Special Administrative Region, if the Country of Domicile of Licensee is the People’s
Republic of China, or (b) the state courts located in the County of New York, New York
State, United States of America or the United States District Court for the Southern District
of New York, United States of America, if the Country of Domicile of Licensee is not the
People’s Republic of China, provided always that, where Licensing Company is the plaintiff,
it may, alternatively and at its sole discretion, submit such dispute either to the competent
courts in the country where Licensee’s office is located, or to the competent courts in any
country where Licensee or its Affiliates are otherwise located or have manufacturing
facilities, or, for claims arising in relation to a Shipment by Licensee or its Affiliates, to any
of the competent courts in the country of destination of the Shipment. Licensee irrevocably
waives any right it may have to object to the jurisdiction, process and venue of any such
court and to the effectiveness, execution and enforcement of any order or judgment
(including a default judgment) of any such court in relation to this License Agreement, to the
maximum extent permitted by the law of any jurisdiction, or to the laws which might be
claimed to be applicable regarding the effectiveness, enforcement or execution of such order
or judgment.
SA
M
14.15 Arbitration Solely for Disputes Concerning Jurisdiction. The parties acknowledge and agree
that any effort to defeat or circumvent the appropriate jurisdiction or jurisdictions for
disputes as set out in Section 14.14 are to be dealt with expeditiously and accordingly if:
(a)
Licensee refers a dispute to any court other than the courts specified in Section 14.14
and Licensing Company alleges that Licensee has done so in breach of Section 14.14;
and
(b)
a dispute arises between the parties as to
(i)
whether Licensee has referred a dispute to a court (other than the courts
specified in Section 14.14) that, under Section 14.14, lacks jurisdiction; or
(ii)
the appropriate remedy by way of injunction and/or damages or otherwise due
to Licensing Company from Licensee arising from such breach,
Licensing Company may refer the dispute under this Section 14.15(b) to arbitration by
giving to Licensee a notice, including a reference to this Section 14.15, specifying the
dispute that Licensing Company has referred to arbitration. The arbitration shall be
conducted by one arbitrator appointed by the American Arbitration Association at Licensing
Company’s request. The arbitrator shall be a lawyer qualified under the laws of, and
engaged in private practice in, the State of New York, United States of America. Before his
appointment he shall have given an assurance (either on oath or binding as a matter of
professional conduct) to discharge the office of arbitrator impartially. The arbitration shall
DVD Automotive LA, Version 1 (060113)
[30]
SA
M
PL
E
be conducted in the English language in New York, New York, the United States of
America. If the arbitrator dies, resigns, refuses to arbitrate or becomes incapable of
arbitrating, Licensing Company shall request the arbitrator to appoint a new arbitrator. If
arbitration had already commenced prior to the new arbitrator being appointed, it shall
continue as if the new arbitrator had been acting from the beginning. The arbitrator shall use
his/her best endeavors to issue a final award within twenty (20) days of his/her appointment.
Procedural matters not specified in this Section 14.15, including costs of the arbitration, shall
be determined by the arbitrator. Neither party may apply to a Court to determine any
question of law arising in the course of, or otherwise in relation to, the arbitration, or appeal
to a Court on a question of law relating to an award.
DVD Automotive LA, Version 1 (060113)
AS WITNESS, the parties hereto have caused this License Agreement to be executed in duplicate on
the date first written above by their duly authorized representatives.
LICENSING COMPANY
ONE-RED, LLC
E
By:
SA
M
PL
Name:________________________
Title:_________________________
[SIGNATURE PAGE TO AUTOMOBILE DVD VIDEO PLAYER AND/OR DVD ROM PLAYER MANUFACTURER LICENSE
AGREEMENT – INSERT LICENSEE NAME]
AS WITNESS, the parties hereto have caused this License Agreement to be executed in duplicate on
the date first written above by their duly authorized representatives.
LICENSEE:
[INSERT NAME OF LICENSEE]
E
By:
SA
M
PL
Name:________________________
Title:_________________________
[SIGNATURE PAGE TO AUTOMOBILE DVD VIDEO PLAYER AND/OR DVD ROM PLAYER MANUFACTURER LICENSE
AGREEMENT – INSERT LICENSEE NAME]
-1APPENDIX A
SA
M
PL
E
LICENSEE AFFILIATES/AUTHORIZED MANUFACTURERS
DVD Automotive LA, Version 1 (060113)
-2APPENDIX B
CONFIRMATION OF BILATERAL AGREEMENT
[insert date]
Royalty Offsetting
Dear [______]:
PL
RE:
E
[_________]
CEO
One-Red, LLC
920 Stewart Drive
Sunnyvale, CA 94085
United States of America
SA
M
We hereby request you to make the royalty adjustment of the “License Agreement for Automobile
DVD Video Player and/or DVD ROM Player Manufacturer” reflecting the Bilateral Agreement
between [insert licensor of the bilateral license arrangement] and our company dated [insert
effective date of the license arrangement], the relevant terms and conditions of which are provided
below.
Our request for royalty adjustment and confirmation of the existence of the Bilateral Agreement
covering Licensed Products, between [insert licensor of the bilateral license arrangement] and our
company, was acknowledged and agreed by [insert licensor of the bilateral license arrangement], a
duly authorized signature of which is indicated below. (The terms used herein shall have the
meaning set forth in the “License Agreement for Automobile DVD Video Player and/or DVD ROM
Player Manufacturer”.)
(i)
Scope of Products.
Agreement:
Please mark the relevant boxes that are subject to the Bilateral
☐
DVD Video Players
☐
DVD ROM Players
DVD Automotive LA, Version 1 (060113)
-3☐
(iii)
Scope of Patents.
Agreement:
)
Please mark the relevant boxes which are subject to the Bilateral
☐
all Licensed Patents with respect to DVD Standard Specifications for the products
marked above.
☐
all Licensed Patents with respect to CD Standard Specifications for the products
marked above.
☐
other (write descriptions here
The term of Bilateral Agreement.
Yours sincerely,
SA
M
_____________________
[Name of signatory]
PL
From [insert date] to [insert date]
E
(ii)
other (write descriptions here
[Title, etc.]
[Name of Licensee]
Acknowledged and Agreed:
By (sign):
________________________________
Name (print): ________________________________
Title:
________________________________
Company:
________________________________
Date:
________________________________
DVD Automotive LA, Version 1 (060113)
)
-4APPENDIX C
PAYMENT OF PATENT EXPERT FEES
Licensee shall pay the fees and expenses of the Patent Expert for the evaluation of the subject Patent
in the following cases:
Licensee requests Patent Expert to evaluate a Patent listed on the Essential Licensor Patent
List to determine whether the Patent qualifies as either a Technically Essential Patent or a
Commercially Essential Patent, and the Patent Expert determines the Patent to qualify as
either a Technically Essential Patent or a Commercially Essential Patent; and
2.
Licensee submits a “Notification of Challenge” (as defined hereinafter) regarding the subject
Patent.
PL
E
1.
SA
M
“Notification of Challenge” means a Licensee’s document to be submitted to the Licensing
Company which explains in sufficient detail that a Licensor’s list of Patent(s) provided by the
Licensing Company to the Licensee to notify that the Patents will be reviewed by the Patent Expert
for the evaluation of the Commercially Essential Patent(s), (i) covers the Licensor’s Patent(s) which
the Licensee believes in good faith to be an economically viable substitute, or (ii) misses the
Licensor’s Patent(s) which the Licensee believes in good faith that there are no economically viable
substitutes.
DVD Automotive LA, Version 1 (060113)